Trademarks and Service Marks Prepared by Group 4 Table of Content s Part 1 Registration of Trademarks and Service Marks Part 2 Right to Mark Part 3 Who May Apply for a Mark Part 4 Trade Mark Application Part 5 The Filing Date Part 6 Proceedings in the Examination of an Application for Registration Part 7 Publication Allowance and Issuance of Certificate of Registration Part 8 Effect and Notice of Registration Table of Content s Part 9 Use of Mark Part 10 Voluntary Surrender or Cancellation Amendment Disclaimer by the Registrant or by Assignee of Record Correction of Mistakes Part 11 Recording of Assignments of Registration or any other Instrument affecting the Title to any Registered Mark including Licenses Division of Registration Part 12 Renewal of Registration Part 13 Petitions and Appeal Part 14 Miscellaneous Provisions Introduction trademark is a sign capable of A distinguishing the goods or services of one enterprise from those of other enterprises To be eligible for registration a trademark must be distinctive so it cannot just be a generic description of the product or service Nor can it be identical or very similar to a trademark already registered or used for that type of product or service Part 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS Registration of Trademarks and Service Marks Pursuant the provisions of Republic Act No 8293 otherwise known as the Intellectual Property Code of the Philippines as amended hereby promulgates the Trademark Regulations of 2017 to Registration of Trademarks and Service Marks Registrability The best way of protecting a trademark is to register it a mark cannot be registered if it Consists of immoral deceptive or scandalous matter or matter which may disparage or falsely suggest a connection with persons living or dead national institutions symbols or bring them into contempt or disrepute beliefs or Registration of Trademarks and Service Marks Registrability Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions or of any foreign nation or any simulation thereof Consists of a name portrait or signature identifying a particular living individual or a deceased President without the person s or widow s written consent Registration of Trademarks and Service Marks Registrability ls identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date in respect of the same goods or services closely related goods and services nearly resembles such a mark as to deceive or cause confusion Registration of Trademarks and Service Marks Registrability Is identical to confusingly similar to or a translation of a mark recognized as internationally and the locally competent authority whether or not it is registered here well known by Registration of Trademarks and Service Marks Registrability Is identical to confusingly similar to or a translation of a mark considered well known which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for Registration of Trademarks and Service Marks Registrability Is likely to mislead the public as to the nature quality characteristics or geographical origin of the goods or services Consists exclusively of signs that are generic for the goods or services that they seek to identify Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice Registration of Trademarks and Service Marks Registrability Consists exclusively of signs or of indications that may serve in trade to designate the kind quality quantity intended purpose value geographical origin time of production of the goods or rendering of the services or other characteristics of the goods or services Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value Consists of color alone unless defined by a given form Is contrary to public order or morality Registration of Trademarks and Service Marks duration extent and geographical area of any use or promotion of the mark market share in the Philippines and in other countries of the goods and or services to which the mark applies the inherent or acquired distinction of the mark reputation quality image degree of or acquired by the mark Criteria for Determining Whether a Mark is Well known Registration of Trademarks and Service Marks extent to which the mark has been registered in the world of exclusivity registration attained by the mark in the world extent to which the mark has been used in the world exclusivity of use attained by the mark in the world commercial value attributed to the mark in the world Criteria for Determining Whether a Mark is Well known Registration of Trademarks and Service Marks record of successful protection of the rights in the mark outcome of litigations dealing with the issue of whether the mark is a well known mark similar marks presence or absence of identical or validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that the mark is a well known mark Criteria for Determining Whether a Mark is Well known Registration of Trademarks and Service Marks Trade Names or Business Names A name or designation may not be used as a trade name if its nature or its use is contrary to public order or morals and if in particular it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name Notwithstanding any laws or regulations providing for any obligation to register trade names such names shall be protected even prior to or without registration against any unlawful act committed by third parties Registration of Trademarks and Service Marks Trade Names or Business Names The remedies provided for cancellation and infringement of marks in Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply to trade names mutatis mutandis Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name However such transfer or assignment shall be null and void if it is likely to mislead the public particularly as regards the nature source manufacturing process characteristics or suitability of purpose
View Full Document
Unlocking...